What District Courts Are Saying About Admissibility Of IPR

Six years after the America Invents Act created inter partes review proceedings, patent disputes increasingly involve parallel litigation, with at least one inter partes review proceeding in tandem with district court litigation(s) involving the same patent claims. Given the frequency with which IPRs are utilized as parallel means of resolving patent disputes, rather than as an alternative to district court litigation, the question that practitioners are starting to face with some regularity is whether, and to what extent, IPR decisions are admissible in district court litigation.

Reprinted with Permission from Law360
What District Courts Are Saying About Admissibility Of IPR
Law360, New York (August 7, 2018) –
Six years after the America Invents Act created inter partes review proceedings, patent disputes
increasingly involve parallel litigation, with at least one inter partes review proceeding in tandem with
district court litigation(s) involving the same patent claims. Given the frequency with which IPRs are
utilized as parallel means of resolving patent disputes, rather than as an alternative to district court
litigation, the question that practitioners are starting to face with some regularity is whether, and to
what extent, IPR decisions are admissible in district court litigation.
In this article, we examine how district courts have analyzed that question, focusing on recent case law
addressing whether and to what extent IPR institution decisions and final written decisions are
admissible in district court cases.
Admissibility of Institution Decisions
The Patent Trial and Appeal Board may institute an IPR if there is a “reasonable likelihood” that the
petitioner will prevail with respect to at least one of the challenged claims.[1] Disputes may then arise
over whether the PTAB’s institution or non-institution decision is admissible evidence in a parallel
district court litigation.
Decisions Instituting Review
When a petition to institute IPR is granted, accused infringers may seek to admit the institution
decisions in parallel district court litigation for various purposes.
Invalidity
Some litigants have sought to introduce institution decisions as evidence of invalidity in district court litigation. District
courts in at least Wisconsin and California have rejected that approach, finding that institution decisions are overly
prejudicial and have little probative value.[2] For example, in Ultratec Inc. v. Sorenson Communications Inc. in the
Western District of Wisconsin, the defendants sought to admit evidence of institution of pending IPR proceedings in light
of the court’s ruling that it would instruct the jury on the presumption of validity and allow plaintiff’s counsel to refer to
the presumption during trial.[3] Finding the defendants’ position “not without merit,” the court nonetheless excluded the
evidence. It reasoned that because “different standards, procedures and presumptions” are applied, evidence of a pending
IPR is “irrelevant and highly prejudicial to the jury’s determination of the validity of the patents.”[4]
Good Faith Belief
David Cavanaugh
Omar Khan
Jeffrey Dennhardt
Reprinted with Permission from Law360
Accused infringers have been more successful in obtaining admission of institution decisions as evidence of their good
faith belief of invalidity.[5] In Ultratec, discussed supra, although the court excluded IPR institution decisions as evidence
to rebut the presumption of invalidity, it allowed defendants to use the evidence to rebut willfulness and show good faith
belief of invalidity.[6] Other district courts, however, have excluded institution decisions from the liability case altogether,
finding the danger of undue prejudice too great — even when the evidence was introduced only to prove good faith belief
of invalidity.[7] For example, in a case pending in the Eastern District of Texas, the court excluded evidence of an IPR
institution, finding that although it had “some relevance” to the defendant’s intent, the institution decision posed an
“extremely high” danger of undue prejudice that “cannot be mitigated simply by the use of a limiting instruction.”[8]
Damages
Defendants have further argued, without much success to date, that institution decisions bear on the value of the asserted
patents and, in turn, on damages issues.[9] In a case pending in the Western District of Pennsylvania, for example, the
defendant sought to introduce evidence of a pending IPR in the damages phase of the trial and for the limited purpose of
showing “whatever differences there are between the prior art and the claimed invention, they are not extensive.”[10] The
district court excluded the evidence. It found that introducing evidence of an incomplete IPR risks jury confusion and is
“highly prejudicial” to the plaintiff because the jury might improperly transfer the IPR findings — made under a more
lenient standard than that employed by the district court — onto the damages determination.[11] The court also warned of
the danger that a jury might credit the findings of the PTAB based on “perceived credibility of government agencies over a
foreign corporate Plaintiff.”[12]
Decisions Denying Institution
A denial of institution should not estop an accused infringer from advancing the petitioned-for grounds in litigation, but
plaintiffs may nonetheless seek to rely on the noninstitution decision to bolster the validity of the challenged patents in
litigation.[13] District courts appear to be divided on whether noninstitution decisions are admissible to bolster validity.
Some district courts find noninstitution decisions admissible as to validity, notwithstanding the possibility that introducing
such evidence might cause jury confusion.[14] In such cases, admissibility is often premised on the notion that appropriate
jury instructions on the standard of proof for invalidity can mitigate any potential confusion.[15] For example, one court in
the Central District of California allowed the plaintiff to introduce at trial the PTAB’s rejection of the defendant’s IPR
petition, which contained many of the same prior art references relied on in the litigation.[16] Meanwhile, it instructed the
jury to make “independent[]” determinations regarding the validity of the patents-in-suit notwithstanding the
noninstitution decision.[17]
Other courts have excluded noninstitution decisions, primarily out of concern for potential jury confusion.[18] A Delaware
court excluded evidence of the PTAB’s denial of a third-party IPR petition based on the same prior art to be presented at
trial.[19] It found the PTAB proceedings to be of “marginal relevance” and the “probative value … greatly outweighed by
the expenditure of time that would be required to give the jury the full context necessary to fairly evaluate the
Reprinted with Permission from Law360
evidence.”[20] Specifically, the court excluded the PTAB’s noninstitution decision for three reasons: (1) a noninstitution
decision is not a decision on the merits; (2) IPR decisions are made by administrative judges who, according to the court,
“are not persons of ordinary skill in the art”; and (3) the defendants were not parties to the IPR.[21]
Admissibility of Final Written Decisions
By statute, final written decisions have preclusive effect in district court litigation with respect to any prior art that a
petitioner “raised or reasonably could have raised” during the IPR.[22] Once a final written decision issues in an IPR, an
accused infringer is barred from raising the same invalidity grounds in subsequent district court litigation. Beyond
estoppel, how an IPR final written decision may be used in parallel district court litigation (and under what circumstances)
appears to depend on various factors. At bottom, courts must weigh the probative value of a final written decision that is
necessarily directed at different grounds and/or different parties than those in litigation.[23]
Final Written Decisions Canceling Claims
Unlike an IPR institution decision, a final written decision is generally the PTAB’s final say on the validity of the
challenged patents. Accordingly, defendants understandably have sought to introduce final written decisions invalidating
claims into litigation.
Some district courts have declined to admit such evidence.[24] In a Delaware case, for example, the defendants sought to
introduce a final written decision of a third-party IPR invalidating certain asserted claims based on the same prior art
references the defendants relied on in the district court. In a brief order, the court found inadmissible “the PTAB’s factual
findings, decisions, and legal conclusions” and only allowed the defendants to introduce evidence of the plaintiff’s
statements made during the IPR as party admissions.[25] While the order did not explain in detail the court’s reasoning,
the plaintiff’s briefing cited extensively to decisions in which courts excluded nonfinal and final U.S. Patent and
Trademark Office decisions based on the different invalidity standards applicable to IPRs/re-examinations and litigation,
and the risk of jury confusion.[26] While it is unclear whether the court found it relevant, the plaintiff’s brief also
emphasized that the final written decision at issue was the subject of a pending appeal.[27]
Albeit in the context of re-examinations, at least one district court has admitted final rejections from the PTO invalidating
the challenged patent. A Northern District of California court denied a plaintiff’s motion in limine to exclude evidence of
several ex parte and inter partes re-examinations that “have run their course before the examiners,” i.e., the examiners had
closed prosecution.[28] The court held that it would be “misleading to instruct the jury on the presumption of validity
while concealing from the jury the fact that the rationale for the presumption — PTO examiner expertise — has been
drawn into question by more recent examiner rejections based in part on prior art previously not disclosed to the
PTO.”[29] Thus, the court indicated that while it would instruct the jury on the presumption of validity, the jury should
also hear evidence that the examiner subsequently issued rejections on two of the patents-in-suit “because the rationale
underlying the presumption of validity is much diminished where the evidence before the factfinder was not before the
PTO during the examination process.”[30]
Reprinted with Permission from Law360
Final Written Decisions Confirming Claims
While claims are afforded the “presumption of validity” in district court litigation, patent holders have argued for the
admission of PTO final written decisions confirming claims as further evidence of validity. Courts, however, are divided
on the admissibility of such decisions.[31]
For example, in a case pending in the Eastern District of Texas, the court admitted an examiner’s final decision confirming
the validity of the challenged claims in an inter partes re-examination initiated by the defendants.[32] The court found the
evidence “highly probative” and the risk of confusion “minimal” because the PTO applies a lower threshold of proof for
invalidity than the court.[33] Presumably, it meant that the defendants’ failure to meet the lower standard before the PTO
is highly probative of their likelihood of satisfying the higher standard before the district court.
On the other hand, a Western District of Wisconsin court held that “Federal Rule of Evidence 403 … obliges the Court
[to] broadly exclude evidence related to the IPR proceedings and reexaminations.”[34] The court reasoned that because
IPR estoppel provisions prevent subsequent challenges to a patent based on (1) any ground the petitioner could have
reasonably raised but did not, and (2) any instituted ground, “the IPRs necessarily covered different prior art than will be
used at trial” such that admission of a final written decision upholding the claims “is irrelevant to the specific prior art at
issue here.”[35] Thus, the court cited potential jury confusion, the potential waste in time and resources, and the lack of
probative value in excluding evidence regarding the IPR proceedings.[36]
Conclusion
The admissibility of IPR institution and final written decisions is, at present, an issue generally committed to the discretion
of the district court. Several common considerations, however, underlie the various decisions analyzed here, including (1)
the purpose(s) for which the IPR decision is sought to be introduced, (2) the probative value of the PTAB decision
weighed against the risk of potential jury confusion and prejudice; (3) whether the decision cancels or confirms the
asserted claims and the relationship between the IPR decision and the presumptions and burdens of proof applicable to
invalidity issues; (4) whether there is a pending appeal of the final written decision; (5) the applicability of IPR estoppel to
the validity issues presented in litigation; (6) the perceived feasibility of educating the jury about the PTAB proceedings
and the different standards of proof applicable at the PTAB and in the district court; and (7) the relationship(s), if any,
between the parties to the litigation and the parties to the IPR.
—David Cavanaugh, Omar Khan and Jeffrey Dennhardt, WilmerHale
David Cavanaugh is a Partner in WilmerHale’s Washington office and specializes in post-grant patent proceedings.
Omar Khan is a Partner in WilmerHale’s New York office and specializes in intellectual property matters.
Reprinted with Permission from Law360
Jeffrey Dennhardt is Senior Associate in WilmerHale’s New York office and specializes in intellectual property litigation.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or
Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not
intended to be and should not be taken as legal advice.
[1] 35 U.S.C. § 314.
[2] See, e.g., Ivera Med. Corp. v. Hospira, Inc., No. 14-CV-1345-H-RBB, 2015 WL 11529819, at *1 (S.D. Cal. July 21,
2015); Ultratec, Inc. v. Sorenson Commc’ns, Inc., No. 13-CV-346-BBC, 2014 WL 5023098, at *2 (W.D. Wis. Oct. 8,
2014).
[3] Ultratec, 2014 WL 5023098, at *2.
[4] Ultratec, 2014 WL 5023098, at *2. On May 9, 2018, the PTO issued a Notice of Proposed Rulemaking that, if enacted,
would align the claim construction standards applied in IPRs with those of district courts. Specifically, the PTO proposed
(1) replacing the broadest reasonable construction standard with the Phillips claim construction standard applied by district
courts; (2) allowing the PTAB to consider a district court’s prior construction of a claim term at issue in an IPR; and (3)
applying the new standard “to all pending IPR … proceedings before PTAB.” 83 Fed. Reg. 21,221-21,226 (May 9, 2018).
[5] See, e.g., Ericsson Inc. v. TCL Commc’n Tech. Holdings, Ltd., No. 2:15-CV-00011-RSP, 2018 WL 2149736, at *11
(E.D. Tex. May 10, 2018) (“TCL’s success in convincing the Patent Office to institute inter partes review of the ’510
patent would ordinarily be evidence of the reasonableness of [its good faith believe of invalidity].”); Allure Energy, Inc. v.
Nest Labs, Inc., No. 9-13-CV-102, 2015 WL 11110643, at *2 (E.D. Tex. May 11, 2015) (good faith belief of invalidity to
disprove willfulness “is bolstered by Patent Trial and Appeal Board instituting inter partes review on all asserted claims”).
[6] See Ultratec, Inc. v. Sorenson Commc’ns, Inc., 45 F. Supp. 3d 881, 920 (W.D. Wis. 2014).
[7] See, e.g., XY, LLC v. Trans Ova Genetics, LC, No. 13-CV-0876-WJM-NYW, 2016 WL 97691, at *2 (D. Colo. Jan. 7,
2016) (“[T]he evidence of the pending Inter Partes Review proceedings is relevant to willfulness, but … that relevance is
substantially outweighed by the danger of undue prejudice.”); see also SSL Servs., LLC v. Citrix Sys., Inc., 769 F.3d
1073, 1092-93 (Fed. Cir. 2014) (district court did not abuse discretion in excluding under Rule 403 evidence of ongoing
re-examination proceeding as evidence of a good faith believe of invalidity to rebut willfulness); VirnetX, Inc. v. Cisco
Sys., Inc., 767 F.3d 1308, 1324-25 (Fed. Cir. 2014) (giving deference to the district court’s exclusion of PTO nonfinal
rejections and declining to decide whether its “opinion in Commil justifies reliance on re-examination evidence to
establish a good faith belief of invalidity” regarding inducement). The Supreme Court has since overruled the Federal
Circuit’s Commil decision with respect to inducement. See Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361 (Fed.
Cir. 2013) vacated, 135 S. Ct. 1920 (2015). The Federal Circuit has not directly addressed the admissibility of IPR
decisions in subsequent litigation.
Reprinted with Permission from Law360
[8] Personalized Media Commc’ns, LLC v. Zynga, Inc., No. 2:12-CV-00068-JRG, 2013 WL 10253110, at *1 (E.D. Tex.
Oct. 30, 2013).
[9] See, e.g., Ultratec, Inc., 2014 WL 5023098, at *2 (“[D]efendants may not rely on evidence of the IPR proceedings
during the damages phase to argue that the patents are entitled to diminished value.”).
[10] Drone Techs., Inc. v. Parrot S.A., No. 14CV0111, 2015 WL 12752847, at *2 (W.D. Pa. Apr. 9, 2015).
[11] Id.
[12] Id.
[13] See HP Inc. v. MPHJ Tech. Inv., LLC, 817 F.3d 1339, 1347 (Fed. Cir. 2016) (“[T]he noninstituted grounds were not
raised and, as review was denied, could not be raised in the IPR. Therefore, the estoppel provisions of § 315(e)(1) do not
apply.”).
[14] Chamberlain Grp., Inc. v. Techtronic Indus. Co., No. 16 C 6097, 2018 WL 2332461, at *19 (N.D. Ill. May 23, 2018)
(admitting evidence of denial of institution with limiting instruction); Dexcowin Glob., Inc. v. Aribex, Inc., No. CV 16-
143-GW(AGRX), 2017 WL 3478492, at *3 (C.D. Cal. June 29, 2017) (same); Metaswitch Networks Ltd. v. Genband US
LLC, No. 2:14-CV-744-JRG-RSP, 2016 WL 3618831, at *4 (E.D. Tex. Mar. 1, 2016) (excluding “any argument,
testimony, evidence or reference to any pending … inter partes review petition,” but noting that “[t]his motion does not
preclude reference to post-grant review petitions where the PTAB denied institution of review”); StoneEagle Servs., Inc. v.
Pay-Plus Sols., Inc., No. 8:13-CV-2240-T-33MAP, 2015 WL 3824208, at *8-9 (M.D. Fla. June 19, 2015) (admitting
denial of institution, but implying that it may be inappropriate for plaintiff to suggest at trial that a denial of institution
strengthens the presumption of validity of the asserted patent); Procter & Gamble Co. v. Team Techs., Inc., No. 1:12-CV-
552, 2014 WL 12656554, at *10-11 (S.D. Ohio July 3, 2014) (considering non-institution decision in granting summary
judgment of no invalidity).
[15] See, e.g., Chamberlain Grp., Inc., 2018 WL 2332461, at *19 (“[I]mproper effects on juries of introducing PTO
determinations can be mitigated with a limiting instruction …. TTI requested, and the Court gave, such an instruction in
this case ….”); Dexcowin Glob., Inc., 2017 WL 3478492, at *3 (“Denial to institute IPR has different legal standards but
any potential confusion can be addressed by appropriate jury instructions on the standard of proof applicable to patent
invalidity defenses and counterclaims.” (internal quotation marks omitted)).
[16] Universal Elecs., Inc. v. Universal Remote Control, Inc., No. SACV 12-00329 AG, 2014 WL 8096334, at *7 (C.D.
Cal. Apr. 21, 2014).
Reprinted with Permission from Law360
[17] Jury Instructions, Universal Elecs., Inc. v. Universal Remote Control, Inc., No. 8:12-cv-329, Dkt. No. 410, at 37
(C.D. Cal. May 21, 2014).
[18] See, e.g., Acantha LLC v. Depuy Orthopaedics Inc., No. 15-C-1257, 2018 WL 2431852, at *2-3 (E.D. Wis. May 30,
2018) (excluding denial of IPR institution due to “[t]he danger of unfair prejudice … [and] jury confusion that cannot be
cured through a jury instruction”); Andover Healthcare, Inc. v. 3M Co., No. CV 13-843-LPS, 2016 WL 6404111, at *2 (D.
Del. Oct. 27, 2016) (“The PTAB’s decision [denying institution] is not a final decision on validity, is based on different
legal standards, and has no estoppel effect.”); Finjan, Inc. v. Sophos, Inc., No. 14-CV-01197-WHO, 2016 WL 4560071, at
*14 (N.D. Cal. Aug. 22, 2016) (“probative value [of denial of institution] … will be far outweighed by likely confusion to
the jury,” and “there is a substantial risk that the jury will improperly substitute its own judgment for the PTO decisions”);
Ziilabs Inc., Ltd. v. Samsung Elecs. Co., No. 2:14-CV-203-JRG-RSP, 2015 WL 13617214, at *3 (E.D. Tex. Oct. 28, 2015)
(same); Wisconsin Alumni Research Found. v. Apple, Inc., 135 F. Supp. 3d 865, 873-75 (W.D. Wis. 2015) (same); Paice
LLC v. Hyundai Motor Co., C.A. No. MJG-12-499, 2015 WL 5158727, at *1-2 (D. Md. Sept. 1, 2015) (admitting
statements made in IPR on case-by-case basis, but excluding “reference to any ruling by the PTAB, including its ruling
regarding the institution or non-institution”); Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Case No. 2:13-CV-
213-JRG-RSP, 2015 WL 627430, at *5 (E.D. Tex. Jan. 31, 2015) (excluding denial of institution).
[19] Interdigital Commc’ns Inc. v. Nokia Corp., C.A. No. 13-10-RGA, 2014 WL 8104167, at *1 (D. Del. Sept. 19, 2014).
[20] Id.
[21] Id.
[22] 35 U.S.C. § 315(e)(2).
[23] For additional information regarding the application of IPR estoppel, see, e.g., David L. Cavanaugh and Christopher
Noyes, WilmerHale Webinar: Untangling IPR Estoppel and Navigating Into the Future, WilmerHale (June 21, 2017),
https://www.wilmerhale.com/en/insights/media/wilmerhale-webinar-june-21-2017; Mindy Sooter and Gregory Lantier,
What the Fed. Circ. Says About IPR Estoppel, Law360 (Sept. 23, 2016), https://www.law360.com/articles/842619.
[24] See, e.g., ABS Glob., Inc. v. Inguran, LLC, No. 14-CV-503-WMC, 2016 WL 4009987, at *3 (W.D. Wis. July 25,
2016) (excluding evidence of final written decision, then on appeal at the Federal Circuit, where district court stayed
proceedings relating to patents at issue in IPRs and same claims were at issue in both forums); Morley v. Square, Inc., No.
4:10CV2243 SNLJ, 2016 WL 2733114, at *3 (E.D. Mo. May 11, 2016) (excluding evidence of final written decision, in
part because “some matters are still on appeal,” but admitting testimony and evidence from IPR proceeding, where same
claims were at issue in IPR and litigation); Magna Elecs., Inc. v. TRW Auto. Holdings Corp., No. 1:12-CV-654, 2016 WL
4238769, at *2 (W.D. Mich. Jan. 28, 2016) (excluding evidence regarding outcomes of IPR proceedings but admitting
statements and evidence from those proceedings, where different claims were at issue in IPRs and litigation); GreatBatch
Ltd. v. AVX Corp., C.A. No. 13-723-LPS, Dkt. No. 594 at 72-74 (D. Del. Jan. 8, 2016) (excluding evidence of final
Reprinted with Permission from Law360
written decision holding claims unpatentable due in part to pending appeal, where claims held unpatentable were a subset
of claims in litigation); Affinity Labs of Texas, LLC v. Ford Motor Co., No. 1-12-CV-580, 2014 WL 11510084, at *1-2
(E.D. Tex. Sept. 8, 2014) (excluding evidence of a PTAB final written decision in a re-examination—then on appeal at the
Federal Circuit—finding one claim term failed the written description requirement, where patent in litigation and patent in
re-examination “share the same specification”).
[25] Reckitt Benckiser Pharms. Inc. v. Watson Labs. Inc., C.A. No. 13-1674-RGA, 2015 U.S. Dist. LEXIS 167982, at *4-
5 (D. Del. Dec. 16, 2015) (same claims at issue in IPR and litigation); Fed. R. Evid. 801(d)(2).
[26] Motion in Limine to Preclude Evidence Concerning Inter Partes Review, Reckitt Benckiser Pharms. Inc. v. Watson
Labs. Inc., C.A. No. 13-1674-RGA, Dkt. No. 386-4 at 1-2 (D. Del. Nov. 17, 2015) (citing Wisconsin Alumni Research
Found., 135 F. Supp. 3d at 874-75; Interdigital Commc’ns Inc., 2014 WL 8104167; Personalized User Model, L.L.P. v.
Google Inc., No. CV 09-525-LPS, 2014 WL 807736, at *3 (D. Del. Feb. 27, 2014); IA Labs CA, LLC v. Nintendo Co.,
857 F. Supp. 2d 550, 551-52 (D. Md. 2012)).
[27] Motion in Limine to Preclude Evidence Concerning Inter Partes Review, Reckitt Benckiser Pharms. Inc. v. Watson
Labs. Inc., C.A. No. 13-1674-RGA, Dkt. No. 386-4 at 3 (D. Del. Nov. 17, 2015).
[28] Oracle Am., Inc. v. Google Inc., No. C 10-03561-WHA, 2012 WL 1189898, at *3 (N.D. Cal. Jan. 4, 2012) (same
claims at issue in litigation and re-examinations).
[29] Id.
[30] Id.
[31] Compare, e.g., Oracle v. Google, 2012 WL 1189898, at *3 (in addition to admitting two PTO re-examination
decisions invalidating claims, the court also admitted a third PTO decision confirming claims for an asserted patent that
had finished re-examination) with Precision Fabrics Grp., Inc. v. Tietex Int’l, Ltd., 297 F. Supp. 3d 547, 553 (D.S.C. 2018)
(explaining that “the determinations of the IPR proceedings generally should not be admitted,” where same claims were at
issue in IPR and litigation).
[32] L.C. Eldridge Sales Co. v. Azen Mfg. Pte., Ltd., No. 6:11CV599, 2013 WL 7964028, at *3 (E.D. Tex. Nov. 14, 2013)
(same claims at issue in re-examination and litigation).
[33] Id.
[34] Milwaukee Elec. Tool Corp. v. Snap-On Inc., No. 14-CV-1296-JPS, 2017 WL 4570787, at *5-7 (E.D. Wis. Oct. 12,
2017) (same claims at issue in IPRs and litigation).
Reprinted with Permission from Law360
[35] Id. at *6. In so holding, the court disagreed with the determination in StoneEagle Servs. that any prejudice can be
cured through jury instructions because, as the prior art at issue in the litigation was necessarily different from the art at
issue in the IPR due to estoppel, “IPRs would only ever be relevant for the broad notion that the patents are resilient, but
such a proposition is misleading and unhelpful.” Id.
[36] The court also addressed the admissibility of a denial of institution, holding that “there is no reason to show the jury
that IPR was not instituted because the Federal Circuit has instructed that it does not matter the reason for the decision not
to institute IPR.” Id. at *6 (citing Interdigital Commc’ns, 2014 WL 8104167).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.

Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.

Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.

To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at privacy@jdsupra.com.

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.

Your Rights

Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.

Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.

Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at privacy@jdsupra.com or by writing to us at:

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.

Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at privacy@jdsupra.com or by writing to us at:

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to privacy@jdsupra.com. We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to privacy@jdsupra.com.

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at: privacy@jdsupra.com.

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at www.jdsupra.com) (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

Improve the user experience on our Website and Services;

Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;

Track anonymous site usage; and

Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

"Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).

"Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.

"Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

Google Analytics - For more information on Google Analytics cookies, visit www.google.com/policies. To opt-out of being tracked by Google Analytics across all websites visit http://tools.google.com/dlpage/gaoptout. This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit http://www.aboutcookies.org which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at: privacy@jdsupra.com.

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